10704860 (B.P.A.I. May. 24, 2012)

Ex Parte King

Board of Patent Appeals and InterferencesMay 24, 2012

10704860 (B.P.A.I. May. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/704,860 11/07/2003 Susan Clark King 4935 7590 05/25/2012 Susan Clark King P.O. Box 485 Homedale, ID 83628 EXAMINER HAND, MELANIE JO ART UNIT PAPER NUMBER 3761 MAIL DATE DELIVERY MODE 05/25/2012 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte SUSAN CLARK KING __________ Appeal 2011-001709 Application 10/704,860 Technology Center 3700 __________ Before DONALD E. ADAMS, LORA M. GREEN, and FRANCISCO C. PRATS, Administrative Patent Judges. GREEN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner‟s rejection of claims 1-3, 6, 7, and 22. 1 We have jurisdiction under 35 U.S.C. § 6(b). 1 Claims 17-21 are also pending, but stand withdrawn from consideration (See Final Rejection dated July 21, 2008). Appeal 2011-001709 Application 10/704,860 2 STATEMENT OF THE CASE Claim 1 is the only independent claim on appeal, and reads as follows: 1. A liner for a child car seat, said car seat having a seat belt or straps, said liner comprising a sheet-like material, said material consisting of A first absorbent layer top surface, and A second nonpermeable layer bottom surface; and a plurality of line points of reduced thickness and reduced strength on said sheet-like material, said line points being adapted to be ruptured or cut easily by consumer and receive the seat belts or straps of the car seat. The following grounds of rejection are before us for review: I. Claims 6 and 7 stand rejected under 35 U.S.C. § 112, first paragraph, as containing new matter (Ans. 3). II. Claims 1-3, 6, 7, and 22 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Perdelwitz 2 (Ans. 4). We reverse the above rejections. We also note that Appellant presents arguments with respect to restrictions and elections required by the Examiner (App. Br. 33- 34 (pp. 13- 14 as numbered by Appellant)). The propriety of a restriction/election, however, is not reviewable by the Board of Patent Appeals and Interferences, but is only reviewable by petition to the Director (see 37 C.F.R. § 1.444; MPEP 818.03(c)). We therefore do not address those arguments further. 2 Perdelwitz, Jr. et al., US 4,885,200, issued Dec. 5, 1989. Appeal 2011-001709 Application 10/704,860 3 ISSUE (New Matter) Does the preponderance of evidence of record support the Examiner‟s finding that claims 6 and 7 contain new matter? FINDINGS OF FACT FF1. The invention relates to a removable liner for a child car seat, existing built-in car seat in a vehicle, a child backless booster car seat and protective arm, and other seats (Spec. 3 1). FF2. The Specification teaches further that the liner may be installed in a backless booster car seat by draping the bottom portion of the liner over the car seat‟s seat area, and then smoothing the top portion over the upholstery (id. at 3). FF3. According to the Specification, “[v]ersions of these liners could be used in other seats in addition to car seats and vehicle seats” (id.). FF4. The Examiner finds that “[a]s to claim 6, there is no support in the disclosure as originally filed for a vehicle seat. The disclosure clearly and repeatedly discloses a child car seat or booster seat” (Ans. 3). FF5. The Examiner further finds that “[c]laim 7 now recites the belt or straps of a vehicle seat, for which the liner of the claimed invention is clearly not structurally enabled and thus the recited line points that correspond with a belt or straps of a vehicle seat are not supported or enabled by the disclosure” (Ans. 3-4). 3 All references to the Specification are to the Specification dated May 2, 2007. As the pages of the Specification are not numbered, we designate the page entitled “BACKGROUND OF THE INVENTION” as page 1, and number consecutively therefrom. Appeal 2011-001709 Application 10/704,860 4 PRINCIPLES OF LAW The test for determining whether a Specification is sufficient to support a particular claim “is whether the disclosure of the application relied upon „reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.‟” Ralston Purina Co. v. Far- Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed.Cir.1985) (quoting In re Kaslow, 707 F.2d 1366, 1375 (Fed.Cir.1983)). The disclosure as originally filed need not provide “in haec verba support for the claimed subject matter at issue,” rather, the disclosure should convey to one skilled in the art that the inventor had possession of the invention at the time of filing. Purdue Pharma L.P. v. Faulding Pharmaceutical Co., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citations omitted). ANALYSIS (Argument 11 of Appellant) Appellant argues that “the construction of Version A, Version B and Version C are depicted in the descriptions and drawings with full, clear, concise, and exact terms to the extent necessary for production with a converter” (App. Br. 29 (p. 13 as numbered by Appellant)). (Argument 12 of Appellant) Appellant argues further that “vehicle seat or other seat” is described at p. 4, paragraph 3, ll. 4-5; p. 5, paragraph 4, ll. 2-3; p. 5, paragraph 5, l. 3, p. 6, l. 3; p. 1, paragraph 3, l. 6; p. 2, paragraph 2, l. 6; p. 3, paragraph 4, ll. 1-2; and Figures 1, 6, and 24 (App. Br. 30 (p. 14 as numbered by Appellant)). Appeal 2011-001709 Application 10/704,860 5 As found above, the Specification teaches the use of liners on vehicle seats in conjunction with the use of child seats (FF1-3). We thus conclude that the Specification provides descriptive support for the term “vehicle seat” as used in claims 6 and 7, and reverse the rejection. CONCLUSION OF LAW We conclude that the preponderance of evidence of record does not support the Examiner‟s finding that claims 6 and 7 contain new matter. We thus reverse the rejection of claims 6 and 7 under 35 U.S.C. § 112, first paragraph, as containing new matter. ISSUE (Anticipation) Does the preponderance of the evidence support the Examiner‟s finding that Perdelwitz teaches a liner for a child car seat, wherein the material of the liner is a “material consisting of [a] first absorbent layer top surface, and [a] second nonpermeable layer bottom surface,” as required by claim 1? FINDINGS OF FACT FF6. The Examiner finds that Perdelwitz teaches a liner for a car seat comprising a sheet-like material, “said material consisting of a first absorbent layer top surface defined by a surface of face sheet 200, and a second nonpermeable layer bottom surface defined by the composite layer of absorbent core 202 and liquid-impermeable backing film 204 which is Appeal 2011-001709 Application 10/704,860 6 adhesively bonded to the core 202 at every point of contact with said core” (Ans. 4). FF7. Perdelwitz teaches that the “infant seat liner is comprised of three layers including a face sheet 200, a core 202, and a backing sheet 204” (Perdelwitz, col. 11, ll. 33-35). FF8. According to Perdelwitz, the “core fibers become thermobonded together and also become thermobonded to the facing sheet” (id. at col. 11, ll. 50-54). FF9. Perdelwitz teaches further that the backing 204 “is adhesively bonded or otherwise secured to the core 202 at every point of contact with the core” (id. at col.11, l. 68-col. 12, l. 2). PRINCIPLES OF LAW To anticipate, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “Consisting of” is a closed transitional phrase that is “understood to exclude any elements, steps, or ingredients not specified in the claim.” AFG Indus., Inc. v. Cardinal IG Co., Inc., 239 F.3d 1239, 1245 (Fed. Cir. 2001). ANALYSIS (Argument 2 of Appellant)Appellant asserts that Perdelwitz discloses a liquid permeable facing sheet, not an absorbent layer top surface (App. Br. 17(p. 1 as numbered by Appellant)). Appeal 2011-001709 Application 10/704,860 7 (Argument 10 of Appellant) Specifically, Appellant argues that one of the differences between claim 1 and Perdelwitz is: the “first absorbent top surface, and a second nonpermeable layer bottom surface” of the current invention, as opposed to: . . . “a liquid permeable facing sheet, an absorbent core comprising fiber material and a liquid impermeable backing sheet” of Perdelwitz. (App. Br. 28 (p. 12 as numbered by Appellant)). We agree with Appellant that Perdelwitz does not teach the claimed liner for a child car seat, wherein the material of the liner is a “material consisting of [a] first absorbent layer top surface, and [a] second nonpermeable layer bottom surface.” First, the Examiner finds that Perdelwitz‟s facing layer reads on Appellant‟s “first absorbent layer top surface” (FF6). According to the Examiner, Perdelwitz explicitly discloses a layer 200 that is liquid permeable and allows liquid to pass therethrough. (Col. 11, lines 33-36) That is the very definition of absorbent. Therefore the sheet-like material consists of a first absorbent layer (200) top surface (the top surface of layer 200). (Ans. 6.) We do not agree. The ordinary artisan would interpret an absorbent layer, as evidenced by Perdelwitz, as containing a material such as cotton batting that absorbs liquids (Perdelwitz, col. 1, ll. 60-65). Second, the claims recites that the material that makes up the liner “consist[s] of [a] first absorbent layer top surface, and [a] second nonpermeable layer bottom surface.” The Examiner equates the first Appeal 2011-001709 Application 10/704,860 8 absorbent layer top surface with the face sheet 200 of Perdelwitz, and the second nonpermeable layer bottom surface with the combination of the core 202 and backing sheet. Specifically, according to the Examiner, the limitation of the “second nonpermeable layer bottom surface” is met by a “composite layer” that is obtained by adhesively bonding at every point of contact the absorbent core 202 to the liquid-impermeable backing film 204. The issue with that analysis is that Perdelwitz specifically states that the liner sheet is made of three layers (FF7), and also teaches that the core fibers of the core 202 are thermobonded the facing sheet 200 (FF8). The Examiner has not explained why adhesively bonding the backing sheet to the core results in a layer that is separate from the face sheet, which has been thermobonded to the core, to result in the two layer material required by claim 1. We are thus compelled to reverse the anticipation rejection. CONCLUSION OF LAW We conclude that the preponderance of the evidence does not support the Examiner‟s finding that Perdelwitz teaches a liner for a child car seat, wherein the material of the liner is a “material consisting of [a] first absorbent layer top surface, and [a] second nonpermeable layer bottom surface.” We thus reverse the rejection of claims 1-3, 6, 7, and 22 under 35 U.S.C. § 102(b) as being anticipated by Perdelwitz. Appeal 2011-001709 Application 10/704,860 9 SUMMARY We reverse: The rejection of claims 6 and 7 under 35 U.S.C. § 112, first paragraph, as containing new matter; and The rejection of claims 1-3, 6, 7, and 22 under 35 U.S.C. § 102(b) as being anticipated by Perdelwitz. REVERSED alw